United States District Court, C.D. California
ORDER DENYING JOINT MOTION TO STAY WITHOUT PREJUDICE
[DOC. NO. 187.]
Marilyn L. Huff, District Judge United States District Court
November 15, 2019, the parties filed a joint motion for a
3-month stay of the action in light of the Federal
Circuit's recent decision in Arthrex, Inc. v. Smith
& Nephew, Inc., No. 2018-2140, 2019 WL 5616010, at
*1 (Fed. Cir. Oct. 31, 2019). (Doc. No. 187.) For the reasons
below, the Court denies the joint motion to stay without
January 10, 2017, Plaintiff VaporStream filed a complaint for
patent infringement against Defendant Snap, alleging
infringement of U.S. Patent Nos. 8, 886, 739, 8, 935, 351, 9,
306, 885, 9, 306, 886, 9, 313, 155, 9, 313, 156, 9, 313, 157,
9, 338, 111, and 9, 413, 711. (Doc. No. 1.) On June 26, 2017,
Snap filed an answer to the complaint. (Doc. No. 61.)
on June 6, 2018, the Patent Trial and Appeal Board instituted
inter partes review of the challenged claims for
each of the patents-in-suit. See Snap Inc. v.
Vaporstream, Inc., Nos. IPR2018-00200, IPR2018-00312,
IPR2018-00369, IPR2018-00397, IPR2018-00404, IPR2018-00408,
IPR2018-00416, IPR2018-00439, IPR2018-00455, IPR2018-00458.
On June 12, 2018, the parties filed a joint motion to stay
the action pending the IPR proceedings as to the
patents-in-suit. (Doc. No. 148.) On June 13, 2018, the Court
granted the parties' joint motion and stayed the action
pending the last Final Written Decision pursuant to 35 U.S.C.
318(a) by the PTAB in the IPR proceedings for the
patents-in-suit. (Doc. No. 150.)
June 4, 2019 and August 30, 2019, the PTAB issued final
written decisions in each of the IPR proceedings for the
patents-in-suit. In those decisions, the PTAB held that the
challenged claims from the '739 patent, the '885
patent, the '155 patent, the '351 patent, and the
'156 patent are all unpatentable, and the PTAB held that
the challenged claims from the '886 patent, the '111
patent, the '711 patent, and the '157 patent had not
been shown to be unpatentable. (Doc. Nos. 156-1, 157-1,
158-1, 158-2, 158-3, 158-4, 159-1.) Each of these final
written decisions have subsequently been appealed to the
Federal Circuit by either Vaporstream or Snap. (Doc. No. 187
light of the PTAB's decisions, on September 13, 2019, the
Court partially lifted the stay of the action. (Doc. No.
160.) The Court lifted the stay as to the '886 patent,
the '111 patent, the '711 patent, and the '157
patent. (Id. at 3.) The Court continued the stay of
the action as to the '739 patent, the '885 patent,
the '155 patent, the '351 patent, and the '156
patent. (Id.) On September 23, 2019, the Court
issued an amended scheduling order in the action. (Doc. No.
October 31, 2019, the Federal Circuit issued its decision in
Arthrex, Inc. v. Smith & Nephew, Inc.,
No. 2018-2140, 2019 WL 5616010 (Fed. Cir. Oct. 31, 2019).
Arthrex involved an appeal from a final written
decision issued by the PTAB finding the claims at issue
unpatentable. Id. at *2. In Arthrex, the
Federal Circuit held that “the current structure of the
[PTAB] violates the Appointments Clause.” Id.
at *8. And “[b]ecause the Board's decision in th[e]
case was made by a panel of APJs that were not
constitutionally appointed at the time the decision was
rendered, ” the Federal Circuit vacated and remanded
the PTAB decision at issue without reaching the merits.
Id. at *11. The Arthrex court further
clarified that its holding is “limited to those cases
where final written decisions were issued and where litigants
present an Appointments Clause challenge on appeal.”
Id. By the present motion, the parties jointly move
for a 3-month stay of the entire action in light of the
Federal Circuit's decision in Arthrex.
district court has “broad discretion to stay
proceedings as an incident to its power to control its own
docket.” Clinton v. Jones, 520 U.S. 681, 706
(1997) (citing Landis v. N. Am. Co., 299 U.S. 248,
254 (1936)). “‘A trial court may, with propriety,
find it is efficient for its own docket and the fairest
course for the parties to enter a stay of an action before
it, pending resolution of independent proceedings which bear
upon the case.'” Mediterranean Enters., Inc. v.
Ssangyong Corp., 708 F.2d 1458, 1465 (9th Cir. 1983)
(quoting Leyva v. Certified Grocers of California,
Ltd., 593 F.2d 857, 863 (9th Cir. 1979)). But ‘[a]
stay should not be granted unless it appears likely the other
proceedings will be concluded within a reasonable time.'
Generally, stays should not be indefinite in nature.
Dependable Highway Exp., Inc. v. Navigators Ins.
Co., 498 F.3d 1059, 1066 (9th Cir. 2007) (quoting
Leyva, 593 F.2d at 864) (citations omitted).
determining whether to grant a motion to stay, a court
“should generally consider the following
(1) the interest of the plaintiffs in proceeding
expeditiously with this litigation or any particular aspect
of it, and the potential prejudice to plaintiffs of a delay;
(2) the burden which any particular aspect of the proceedings
may impose on defendants; (3) the convenience of the court in
the management of its cases, and the efficient use of
judicial resources; (4) the interests of persons not parties
to the civil litigation; and (5) the interest of the public
in the pending civil and criminal litigation.
Keating v. Office of Thrift Supervision, 45 F.3d
322, 324-25 (9th Cir. 1995); see Blue Cross & Blue
Shield of Alabama v. Unity Outpatient Surgery Ctr.,
Inc., 490 F.3d 718, 724 (9th Cir. 2007). “The
proponent of a stay bears the burden of ...